Disclaimer:The answer below is a discussion of typical
practices and is not to be construed as legal advice of any kind. Readers
are encouraged to consult with qualified counsel to answer their personal
legal questions.

Answer:Yes,
and sometimes the artistic nature can be more important than the invention
itself.

Details:
With the move
to more public participation in patent examination, such as Peer to
Patent, the importance of the “artistry” of patents will grow.The public needs to be inspired to
read a patent application and devote time and effort to providing useful
input not only in its examination, but in the development of the idea
itself.That’s what artistry
does.

Most patents (as opposed to
the inventions themselves), however, are long on legalese and short on
inspiration.I wondered,
however, if there might be a few artistic examples out there.

I posed the question “Are
patents art?” on Linked In to see if the collective intelligence of
that professional network could help me out.

A great answer was provided
by my good friend and manager of Praxair Inc’s library services, Crystal
Megaridis.Here is an excerpt.

Hi Mark! Here's my answer:

Absolutely, Positively!!! It's not
only art - it can be (sacred) antiques as well. Here's why I say so... My great great grandfather was a
typical, clever farmer in upstate NY, living circa 1820 - 1890. During his life he patented 9 farm
& household implements. One of these was a very early
reaper (pre-McCormick, by ~10 years, maybe more), and we have the original
patent, as well as his beautiful scale model! The model is SO beautiful,
perfectly smooth wood, and so intricate. The patent document is amazing too
- it's about 18" wide by about 30" tall, with a red ribbon tied as the
binding, and a seal on the front page. I even still have the table (c.
1850) that he did his drawings on….

Having these things, as well as a few
other interesting family items, led me about 20 years ago to become an
avid genealogist (which actually inspired me to switch careers from
architect to librarian!) So,
I would say that patents are all you suggest and more!

·identify and solve technical
hurdles in an early stage invention, and

·increase consumer interest in a
new invention.

The workshop will explore these goals through a fundamental
redesign of patents which fully meet USPTO requirements made possible by
the technology of Peer-to-Patent. Real life examples will be
examined and participants will participate in patent drafting exercises
based on peer-to-patent principles.

Peer-to-Patent is a joint program between New York Law
School and the USPTO to provide “open” patent examination.
Applicants volunteer to have their patent applications posted on the
Peer-to-Patent website. Members of the public may then upload prior
art and commentary. The prior art and commentary is passed on to a
USPTO examiner and the applications are examined right away.

Analysis
Available

Lincoln National
Life Insurance Company Alleges Patent Infringement
- GMWB

Lincoln
National Life Insurance Company now has three patents
covering the methods and processes used in providing
Guaranteed Minimum Withdrawal Benefits (GMWBs)
for variable annuities.Two
additional patent applications remain pending.

Lincoln is asserting its
patent rights through patent infringement lawsuits against three
competitors who offer GMWBs: Transamerica Life Insurance
Company,Jackson National Life Insurance
Company, and Sun Life Assurance
Company.Claims in one patent are now the subject of a USPTO
reexamination.

GMWBs have been credited
with saving the variable annuity industry and are commonly offered
by many of the 25+ insurers currently selling variable annuity
products.Lincoln National’s
claim of protected patent ownership of the GMWB benefit is a threat to
competitors offering GMWBs in the variable annuity market.

Tom Bakos
(co-editor of the Insurance IP Bulletin) has
prepared a comprehensive Intellectual Property
Analysis of the Lincoln National GMWB family of
IP.This analysis (over 200
pages of printed detail plus supporting documents on CD) represents well
over 200 hours of review, analysis, and dissection of the specifications
and claimed inventions.It
describes prior art (believed to be relevant) either not disclosed or not
considered by the USPTO on examination.It addresses the quality of the
claims made.

For more information
regarding this Analysis and how to acquire it, please go to:Intellectual Property
Analysis
(http://www.BakosEnterprises.com/IPA).

Statistics

An Update
on Current Patent Activity

The table
below provides the latest statistics in overall class 705 and subclass 4.
The data shows issued patents and published patent applications for this
class and subclass.

Subclass 4 is
used to identify claims in class 705 which are related to:
Insurance (e.g., computer implemented system or method for
writing insurance policy, processing insurance claim,
etc.).

Issued
Patents

15 new
patents have been issued between 8/12 and 10/30/2008 for a total of 79 in
class 705/4 during the first 10 months of 2008 – almost 8 new patents
issued each month.

Patents are
categorized based on their claims. Some of these newly issued
patents, therefore, may have only a slight link to insurance based on only
one or a small number of the claims therein.

The
Resourcessection provides a link to a detailed list of
these newly issued patents.

Published Patent
Applications

43
new patent applications have been published between 8/14 and 10/30/08 for
a total of 170 during the first 10 months of 2008 in class 705/4
continuing the pace of the prior two months and indicating a stable level
of patent activity in the insurance industry in 2008 (about 17 new patent
applications per month).

The Resourcessection provides a link to a detailed list of these newly
published patent applications.

Again, a reminder -

Patent applications have been published 18
months after their filing date only since March 15, 2001.Therefore, there are many pending
applications that are not yet published.A conservative estimate would be that
there are, currently, close to 250 new patent applications filed every
18 months in class 705/4.

The published patent applications included
in the table above are not reduced when applications are issued as
patents, rejected, or abandoned.Therefore,
the table only gives an indication of the number of patent applications
currently pending.

In this
issue’s feature article we introduce you to an experiment in better
business method patent examination that we have initiated.We invite you to participate.It is our hope that we can
encourage individuals in the various practice areas in which invention
occurs to contribute their expertise in order to have better, more
meaningful invention and patents that can be called art.

In our Patent
Q/A, the question of patents as art is discussed.Patents, of course, are an
expression of the innovative nature of mankind.While the underlying invention is
artful, its expression, the patent, may also be art in and of itself.A patent is a written description
(which may also include some drawings) of an invention meant to
communicate how to make and use it.Clearly, a patent lives forever – as demonstrated by the example
given in the Q&A.Patents
reflect the history of their day and how inventors thought.They are a valuable addition to
world literature.

The Statistics section updates the current status of
issuedUS patents and published patent
applications in the insurance class (i.e. 705/004).We also provide a link to the Insurance IP Supplement with
more detailed information on recently published patent applications and
issued patents.

Our
mission is to provide our readers with useful information on how
intellectual property in the insurance industry can be and is being
protected – primarily through the use of patents.We will
provide a forum in which insurance IP leaders can share the challenges
they have faced and the solutions they have developed for incorporating
patents into their corporate culture.

Please
use the FEEDBACK link to provide us with your comments or
suggestions.Use QUESTIONS
for any inquiries.To be
added to the Insurance IP Bulletin e-mail distribution list, click on ADD
ME.To
be removed from our distribution list, click on REMOVE ME.

There is a critical need to improve the
speed, efficiency, and thoroughness of business method patent
examinations.Towards, that
end, we have initiated a two pronged experiment to see if modern
technology combined with good old fashioned customer focus can help in
achieving that improvement.

And you, our readers, are invited to
participate.

Peer-to-Patent Patent Applications Customized for You, the
Reviewer

Our first prong is to evaluate new formats for
patent applications specifically tailored to meet the needs of
Peer-to-Patent reviewers.That could be
you.

Peer to Patent is a program implemented
by the USPTO in June 2007 as a pilot to test the extent to which public
comment and document submission would provide useful prior art to patent
examiners.Originally Peer to Patent was limited in scope to patent
applications assigned to Technology Center 2100 but has since been
expanded to include applications in Class 705.

Our plan is to eliminate the interminably
long, deliberately obfuscated, and incomprehensibly vague patent
applications.We want to post patent applications
written by experts for experts.

Towards that end, Tom has developed a
rather intriguing invention which we have submitted for Peer-to-Patent
review as a “test case”.The USPTO has indicated that
publication will occur sometime in February, with posting on
Peer-to-Patent shortly thereafter.

The invention itself addresses the
critical needs in today’s marketplace for more efficient ways to fully
underwrite life insurance policies, and more transparency in life
insurance pricing.It’s
called a “Risk Assessment Company”.The basic idea is that a Risk Assessment Company will be a
repository for continuously updated personal medical and other risk
information that can be used to instantly generate a fully underwritten
life insurance quote by any participating company at any time.Obviously,
there is much more to it that this brief description, but we invite our
readers to stay tuned for a full disclosure of the details of the
invention when it’s posted on Peer to Patent.

What makes this application different is
that it was written by an actuary for actuaries (and other knowledgeable
persons in insurance).This
means that it gets right to the point and uses language and concepts our
readers with knowledgeable in the insurance field, will find easy
understand and easy to review.We think you will find it a lot more enjoyable and perhaps even
provocative to read than a typical business method patent
application.

If you would like to get a jump on
Peer-to-Patent and take an early look at the application, feel free to
drop us a note and we will forward a copy after we put the appropriate
Non-disclosure agreement in place.

The Examiner Advocate

Prong II of our experiment is something
we call “The Examiner Advocate”[1] .The basic
idea behind the Examiner Advocate is that we will team a technical expert
with a licensed patent practitioner to examine a published patent
application before a patent examiner looks at it.This technical expert – patent
expert team will then post a “Proposed Office Action”[2] and an “Expert Opinion”[3] right on the web as an educational
resource for the patent examiner.The patent examiner will be free to use what we post in any way
that he or she feels is appropriate.The technical expert – patent expert team will stay with the
application all the way through the process with commentary posted after
each correspondence between the patent applicant and the
examiner.

We are volunteering our own patent
application, “Risk Assessment Company”, as the first test of our examiner
advocate process.While the volunteer reviewers are
submitting commentary and prior art to the USPTO through Peer to Patent,
our professional team will be posting fully drafted Proposed Office
Actions on the Examiner Advocate website for the benefit of all
involved.

Obviously, it would be a conflict for us to
draft Proposed Office Actions or Expert Opinions on our own invention, so
we are asking for volunteers who would like to take on that role in this
trial.If you would like to
be considered or would like to learn more, we invite you to contact us
through mark.nowotarski@gmail.com or tbakos@bakosenterprises.com

The Next Generation of Business Method Patents

It’s time for a breakthrough in how business method patents
are written and examined.We
hope our modest experiments through Peer-to-Patent and The Examiner
Advocate will at the very least inspire others to make even bolder
explorations into the next generation of business method patents.

[2] An “office action” is a letter from a
patent examiner to an inventor which tells the inventor whether or not he
or she will be granted a patent.The inventor gets to respond.The examiner gets to respond to the response, and so on until
agreement is reached or the patent application is abandoned.After two rounds of office
actions, the inventor has to pay more fees to get more
examination.

[3] These will be formal “132 declarations”
that the Examiner can rely on as evidence.

Update

USPTO
Efforts to Bring in Expertise

On July 22/08 Tom Bakos
wrote a letter to the patent office making suggestions on how the patent
examination process relative to business method patents might be
improved.A response from the USPTO indicated
that the patent office was working with the Office of Personnel Management
(OPM) to:

·Hire qualified candidates in areas such as actuarial
science and finance for the business methods areas, and

·Create a Chief Scientist position.

A follow-up indicates
thatthe patent office as of late November,
2008 had not yet received final approval from OPM to hire experts in
actuarial science or finance and that no changes in the general
qualification requirements for examiners has yet been undertaken.

The follow-up indicated
that hiring for a Chief Scientist in the electrical discipline where the
need is greatest has begun.

The USPTO has noted that
patent application filings in business method categories have remained
fairly level over the past couple of years.The recent economic downturn and
recent court decisions (e.g. Bilski) are all expected to have an impact of
new filings.Therefore, the
patent office seems to be in a wait-and-see mode right now.